Ex Parte John

Patent Trial and Appeal Board

Jul 31, 2017

13055858 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/055,858 03/07/2011 Frank St. John 115581.00139 8620
27557 7590
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
B elay @ blankrome. com
W ashingtonDocketing @ blankrome. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK ST. JOHN
Appeal 2016-000954
Application 13/055,858
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 13—15 and 18—28 under 35 U.S.C. § 103(a) as
unpatentable over Garbar et al.1 2 3in view of Confalone et al.2,3 A hearing was held
on July 20, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 WO 2006/030286 Al, published March 23, 2006 (“Garbar”).
2 US 2004/0048964 Al, published March 11, 2004 (“Confalone”).
3 The rejection of claim 24 under 35 U.S.C. § 112, first paragraph, was withdrawn
in the Examiner’s Answer dated September 10, 2015 (“Ans.”), at 2.
Appeal 2016-000954
Application 13/055,858
The claimed subject matter relates to a process for forming a conductive
pattern on a substrate comprising, inter alia, applying a nanoparticle ink to a
coated substrate wherein additional processing steps are not required after the
application step to form an electrically conductive pattern. Spec. 2.
The Appellant discloses that “[previously known conductive ink
compositions have required post printing [or application] heat treatment in order to
sinter the printed pattern so that it becomes conductive.” Spec. 1. In contrast, the
Appellant states that “[t]he invention contemplates a process that does not require,
for example, heat sintering, after printing of the ink in order to form a conductive
pattern.” App. Br. 5 (citing Spec. 1—2).4
Independent claim 13 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. The limitation at issue is italicized.
13. A process for forming a conductive pattern on a substrate,
comprising:
providing a nanoparticle ink containing metal nanoparticles, a
humectant or mixture of humectants, a dispersant, and a solvent
making up the balance of the weight of the ink;
providing a substrate, wherein the substrate is coated with an
ink receptive coating wherein the ink receptive coating contains about
10% to 75% (by weight of the total ink receptive coating) titania
powder and about 0.1% to 10% (by weight of the total ink receptive
coating) of a resin either dissolved in a liquid or in an emulsion or
dispersion in a liquid, and
applying the nanoparticle ink to the coated substrate using an
application process in a pattern;
wherein no further processing step is taken to render the
pattern electrically conductive.
App. Br. 12 (emphasis added).
4 Appeal Brief dated April 15, 2015.
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Appeal 2016-000954
Application 13/055,858
B. DISCUSSION
The Examiner finds Garbar teaches an inkjet printable composition
comprising metal nanoparticles, solvent, humectants, and dispersants that is printed
on a substrate and subsequently sintered. Final 3^4.5 Garbar discloses that
sintering (i.e., a post printing treatment) increases the conductivity of the printed
pattern. Garbar 3,11. 30-31; see also Final 4 (citing Garbar 3). The Examiner
finds that the increased or improved conductivity disclosed in Garbar “implicitly
teaches the trace was conductive prior to sintering (no further step is required to
make the deposited pattern conductive).” Final 7. The Examiner concludes that
the limitation at issue (i.e., “no further processing step is taken to render the
pattern electrically conductive” recited in claim 136) “does not limit steps taken to
improve or increase electrical conductivity,” such as the sintering step disclosed in
Garbar. Ans. 5.
The Appellant recognizes that “[o]nce [Garbar’s] compositions are applied
to the substrate via inkjet printing, they are subsequently treated to increase their
conductivity.” App. Br. 6 (emphasis added). The Appellant, however, argues that
“‘increasing’ conductivity from a level of zero conductivity is also ‘increasing’
conductivity.” App. Br. 9. The Appellant argues “there is no evidence that the ink
of Garbar is conductive before sintering.” App. Br. 10.
We disagree. In Garbar Example 15,7 for example, a dispersion comprising,
inter alia, silver nano powder was prepared. Garbar discloses:
A conductive pattern was printed with this dispersion using a
Lexmark printer Z602, cartridge Lexmark Blackl7 and 16 in which
the black ink had been replaced with this dispersion. The dispersion
5 Final Office Action dated October 23, 2014.
6 App. Br. 12 (emphasis added).
7 See Reply Brief dated October 28, 2015, at 3 (referring to Garbar Examples 8 and
12-24).
3
Appeal 2016-000954
Application 13/055,858
was printed on HP photoquality paper semi-glossy (C6984A). Two
passes were performed. The conductive pattern was sintered at 150°C
for 90 minutes, after which its resistivity was measured and
determined to be 70 pQ cm.
Garbar 10,11. 19-24 (emphasis added).
Based on that disclosure in Garbar, a preponderance of the evidence
supports a finding that Garbar’s sintering step is not taken to render the printed
pattern conductive. Rather, the sintering step described in Garbar is performed on
a pattern that is conductive to increase the electrical conductivity of that pattern.
Such a sintering step is not excluded by claim 13, which recites that “no further
processing step is taken to render the pattern electrically conductive.”8 App. Br.
12 (emphasis added). Furthermore, even if the Appellant were correct in asserting
that Garbar’s ink composition is not conductive without a sintering step, Garbar’s
language certainly would have suggested to a person of ordinary skill in the art that
Garbar’s ink could have been conductive without sintering.
The Appellant also argues that “the use of the claimed nanoparticle ink
applied to the claimed substrate surfaces” achieves an unexpected result (i.e.,
allowing for printing of conductive patterns without the need for further processing
steps such as sintering). App. Br. 11. The Appellant, however, does not direct us
to any evidence of unexpected results. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (“unexpected results must be established by factual evidence”).
For the reasons set forth above, the § 103(a) rejection of claim 13 based on
the combination of Garbar and Confalone9 is sustained.
8 The Examiner correctly notes that the claims on appeal do not recite a
conductivity value. Ans. 4.
9 The Examiner finds Confalone is evidence that “when printing patterns on a
substrate it is known to use an ink receiving layers [sic] ... to improve ink
retention.” Final 4 (citing Confalone | 6). The Examiner concludes that it would
4
Appeal 2016-000954
Application 13/055,858
The Appellant does not present arguments in support of the separate
patentability of any of dependent claims 14, 15, and 18—28. Therefore, the
§ 103(a) rejection of claims 14, 15, and 18—28 also is sustained.
C. DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
have been obvious to use Confalone’s ink receiving layer on Garbar’s substrate to
improve ink retention. Final 4. In the Appeal Brief, the Appellant does not argue
that the Examiner’s reason for combining Garbar and Confalone is erroneous. See
App. Br. 10 (arguing that “Confalone fails to cure the deficiencies of Garbar
discussed above”).
5